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COPYRICHT DEPOSIT. 



PATENTS 



A Manual Relating to 
UNITED STATES PATENTS 

for 

Inventors and Patentees 



HOWSON AND HOWSON 



4th Edition 



Published by 

HOWSON AND HOWSON 

Counsellors-at-Law, Solicitors of Patents 

32 South Broad Street, Philadelphia, Pa. 

38 Park Row, New York, N. Y. 

918 F Street, Washington, D. C. 

1904 



Jfc^ 



LIBRARY cf CONGRESS 
Two Copies Received 

NOV 17 1904 

^Copyrient tntry 
CLASS a. XXc- NOi 
COPY B. 






HOWSON & HOWSON 

Counsellors- at-Law 

AND 

Solicitors of Patents 

PHILADELPHIA 

West End Building, 32 South Broad Street 

NEW YORK 

Potter Building, 38 Park Row 

WASHINGTON 

National Union Building, 918 F Street 

Fiftieth Anniversary Edition 

Copyright, 1889, 1890, 1896, 1904, by Howson & Howson 



printed at ^s^ 

The Sign of the Ivy Leaf 

philadelphia v 






CONTEN TS 

Page 

United States Patents 15 

Caveats 33 

Opinions on Patents 39 

Patent Suits 42 

Trade-marks 59 

Prints and Labels 71 

Copyright 74 

Foreign Patents 79 

Corporations 83 



PHILADELPHIA 

Charles Howson 

Henry Howson 

Hubert Howson 

Charles H. Howson 

Harry Smith 



NEW YORK 

Hubert Howson 
Resident Partner 



WASHINGTON 

Robert T. Frazier 
Resident Partner 



INTRODUCTION 

This little book, which, in the present 
edition, has been completely revised, is 
written with the view of giving, in com- 
pact and readily accessible form, answers 
to the most ordinary and constantly recur- 
ring questions as to the Lavv^ and Practice 
of Patents, Trade-marks and Copyrights, 
which are asked of us in the regular course 
of our business. 

It may be well to explain at the outset 
that the business of our firm has two dis- 
tinct, though related branches. Patent Law 
and Patent Soliciting, that is to say, we not 
only undertake the Soliciting of Patents, 
American and Foreign, and the Register- 
ing of Trade-marks and Copyrights, but 
also the conducting of suits in the Courts 
relating to Patents, Trade-marks and Copy- 



8 Introduction 

rights. Both branches of the business 
have been conducted by us for many years. 

Our Philadelphia house was estab- 
lished by the late Mr. Henry Howson fifty 
years ago, since which time many thou- 
sands of patents have been applied for 
through our offices, and we have been 
counsel in many Patent suits in the Courts 
of the United States, and litigated cases 
in the Patent Office. 

Our Washington branch office has been 
established since 1868, chiefly to increase 
our facilities for making searches and pre- 
liminary examinations at the Patent Office, 
and for watching and expediting the prog- 
ress of pending applications in our care. 
That office is now under the management 
of a resident partner who has charge of our 
Southern practice. 

In 1887, to further meet the require- 
ments of our business, and for the conveni- 
ence of a portion of our clientage, we 
opened an office in New York, which is in 



Patent Soliciting 9 

charge of a partner resident there, and we 
now receive and prepare applications for 
Patents at any one of our three ofifices. 

Our Philadelphia ofifices are in the 
West End Building, 32 South Broad 
Street; our New York offices are in the 
Potter Building, 38 Park Row, and our 
Washington offices are at 918 F Street. 
Communications sent to any of these ad- 
dresses will receive prompt attention. 



PATENT SOLICITING 

The importance of the Patent Solici- 
tor's work and the necessity of care in the 
selection of a Solicitor cannot be better 
set forth than in the following quotation 
from the "Rules of Practice," printed 
and gratuitously distributed by the Patent 
Office for the instruction and guidance of 
inventors : — 

''As THE VALUE OF PATENTS DEPENDS 
LARGELY UPON THE CAREFUL PREPARA- 



10 Introduction 

TION OF THE SPECIFICATION AND CLAIMS^ 

the assistance of competent counsel will, in 
most instances, be of advantage to the 
applicant; but the value of their services 
will be proportionate to their skill and 
honesty, and too much care cannot be 

EXERCISED IN THEIR SELECTION/' 

While in all cases we make our fees as 
reasonable as possible, we do not enter into 
the competition of ''cheapness''; do not 
exact or receive contingent fees, and do not 
make our fees conditional upon securing a 
Patent, nor undertake to return fees, or 
parts thereof, if a Patent be not obtained. 
We do not carry on a speculative business. 

In this connection it is proper to say 
that it is generally out of the question to 
pass a positive opinion as to the novelty 
of an invention without a special examina- 
tion, such as would necessarily cost the 
client considerably more than to apply for 
a Patent at once, and have the question 
determined by the Patent Office. 



Law Suits 11 

This will be sufficiently obvious upon 
reflecting that, in the United States alone, 
Patents are being granted at the rate of 
more than twenty-five thousand yearly; 
that thousands are annually granted in 
other countries, and that many inventions 
never patented here or elsewhere are 
shown or described in some one or more 
of a multitude of printed technical books 
and journals. Under our law no inven- 
tion is new and patentable which, before 
it was made by the party claiming it, had 
been patented or described in any printed 
publication in this or any foreign country. 

LAW SUITS 

The Prosecution or Defence of Patent 
Suits is, as already stated, an important 
branch of our business. We have managed 
many Patent litigations, and some of great 
importance, both in the Courts and in the 
Patent Office. 



12 Introduction 

A Patent Solicitor should be a Patent 
Lawyer to the extent at least of being 
thoroughly conversant with the rulings of 
the United States Courts in Patent cases, 
for by those rulings the practice of the 
Patent Office is, or should be, governed; 
and the more of a Patent Lawyer the So- 
licitor is, the better Solicitor he is likely to 
be ; at least so far as concerns the important 
work of drawing specifications and claims. 
On the other hand, it is a great advantage 
to the Patent Lawyer to be thoroughly 
conversant with the organization, practice 
and routine of the Patent Office, and to 
have the Solicitor's facilities for making 
searches, obtaining information, copies, 
etc., from the Patent Office. We believe, 
therefore, that by coupling the practice of 
Patent Soliciting with the practice of 
Patent Law we have secured special ad- 
vantages for the prosecution of both 
branches. 

As clients frequently ask our advice 



Law Suits 13 

upon matters relative to the organization 
of corporations for the purpose of exploit- 
ing their inventions, we have prepared 
ourselves to attend to the formalities 
requisite for the securing of charters under 
the laws of the various States, and of 
advising our clients upon such matters 
concerning the law of corporations and 
other forms of association as are likely to 
prove useful to inventors or patentees. 



UNITED STATES PATENTS 

Patents of Invention are granted 
for any new and useful art (process) : 
machine: manufacture (article of) : or 

COMPOSITION OF MATTER (compOUuds, 

chemical or mechanical, used in medicine 
or in the arts) : or for any new and useful 
IMPROVEMENT of a kuown art, machine, 
manufacture or composition of matter. 

That an invention is patented, does 
not prevent the grant of a Patent, either to 
the same or to another person, for an im- 
provement on that invention. The owner 
of the "improvement'^ Patent cannot use 
the original invention during the life of 
the Patent therefor, without consent of its 

15 



16 United States Patents 

owner, and the patentee of the original in- 
vention cannot, during the life of the ^'im- 
provement" Patent, use said improvement 
without consent of the owner of it. 

An invention is new, within the mean- 
ing of the law, when it is original with the 
person claiming it, and had not, before he 
invented it, been known to, or used by any 
other person in this country, nor patented, 
nor described in a printed publication, in 
this or any foreign country. 

Prior knowledge or use of the inven- 
tion by others in a foreign country, as 
distinguished from a prior foreign patent 
or printed publication, will not defeat the 
rights of an American Patentee, unless it 
is made to appear that, when he applied 
for his Patent, he was aware of such prior 
foreign knowledge or use, and did not 
believe himself to be the first inventor. 

An invention new in the sense above 
explained, and useful in the senses that it is 
capable of being used for a lawful purpose, 



Patents of Invention 17 

and is not mischievous, injurious, or abso- 
lutely frivolous, and that it has been so 
completely thought out by the inventor 
that he can make and use it himself, or 
explain it so as to enable another person 
skilled in the art to make and use it from 
the explanation, and without invention on 
his ov^n part, is patentable, provided that 
it has not, for more than two years before 
the application for Patent, been in public 
use or on sale in this country, nor patented 
nor described in any printed publication 
in this or any foreign country, or is not 
proved to have been abandoned by the in- 
ventor. Provided further, however, that 
where an invention has been first patented 
or caused to be patented by an inventor or 
his legal representatives or assigns in any 
foreign country, no patent can thereafter 
be secured in this country by the inventor 
unless his application here be filed within 
one year after the earliest application for 
the foreign patent. 



18 United States Patents 

A Patent Covers and Protects only 
what is lawfully and distinctly claimed by 
the inventor in his specification, copy of 
which is annexed to and forms part of the 
Patent. 

Who May Obtain a Patent. — Any 
person (citizen or alien) who has invented 
any new, useful and patentable subject. 
The right to a patent, or an interest therein, 
may be assigned by the inventor before the 
Patent is granted, and in such case, the 
Patent will be issued to the assignee, or to 
the inventor and assignee jointly, as the 
case may be, upon request, and the record- 
ing of the assignment in the Patent Office 
in proper time. But in all cases, whether 
there be an assignment or not, application 
for Patent must be made and the necessary 
papers therefor executed by the inventor 
himself, if living, or if he be dead, by his 
executors or administrators. 



Preliminary Examinatio7t 19 

For a Joint Invention, that is, an 
invention made by two or more persons 
jointly, the parties are jointly entitled to a 
Patent, and must join in applying for it. 

A Patent granted to one person for an 
invention made not by himself alone, but in 
conjunction with another, or other per- 
sons, is void. On the other hand, a Patent 
granted to two or more persons as joint 
inventors for what was, in fact, the sole 
invention of one of them, is void. 

Duration of Patents of Invention 
is seventeen years from the date of issue. 

No Extensions of Patents of inven- 
tion are obtainable, except by special act of 
Congress. 

PRELIiMINARY EXAMINATION 

The Patent Solicitor, who is properly 
equipped for his work, can, for a fee 
of five to ten dollars, make what is 
termed a ''preliminary examination.'' This 



20 United States Patents 

preliminary examination is limited in 
scope, and is not, within that limit, to be 
regarded as conclusive or as more than 
approximately accurate. It does not deter- 
mine the question of novelty, and a pre- 
liminary examination report is not a cer- 
tificate of novelty or patentability. 

We are thus explicit on this subject 
because it is not uncommon for inexperi- 
enced inventors to suppose that a Patent 
Solicitor can decide whether an invention 
is new or not, without trouble to himself 
or expense to his client, and that, if he 
advises application for a patent, he tacitly 
certifies the invention to be new and patent- 
able. 

We generally advise the making of a 
Preliminary Examination before filing an 
application for a patent, unless there are 
special reasons for making application 
without a moment's delay. Our Wash- 
ington office enables us to make prelimi- 
nary examinations promptly, and to report 



Application for 21 

the result to the party interested within a 
few days. All that we need for the pur- 
pose is an explanation of the supposed in- 
vention, oral or written, with a drawing 
or sketch, when the case admits of one. 

If there be any prior United States 
Patent in the same class, and which com- 
pletely anticipates the supposed invention, 
the preliminary examination will generally 
disclose the fact. 

Moreover, the inquiry into the prior 
state of the art, so far as exhibited in the 
United States Patent Records, is useful in 
enabling one to judge with some degree of 
accuracy the character and bounds of the 
claim or claims which may properly be 
presented, if application is made. 

APPLICATION FOR PATENT 

Application for Patent requires a 
petition to the Commissioner of Patents, a 
written specification, drawings, where the 
case admits of them, an oath of invention, 



22 United States Patents 

and payment of first government fee of 
Fifteen dollars. 

All the documents should be prepared 
in substantially the form prescribed by the 
Rules of Practice of the Patent Office. 

Where a case is placed in our hands, 
we, of course, see to the preparation of all 
necessary documents, specification, draw- 
ing, etc. 

Models or Specimens are not now 
required to be filed wath the application, 
nor will the Office receive a model unless 
it dsks for one, and models are rarely 
asked for. 

The specification and claims form the 
most important part of an application for a 
Patent, and the part for which, most par- 
ticularly, inventors find the services of a 
competent Solicitor not only desirable, but 
necessary. 

If the specification incorrectly or insuf- 
ficiently describes the invention, so that 
persons skilled in the art cannot, from the 



Application for 23 

description, practically make and use the 
invention, or if it fails to particularly point 
out what part of the matter described the 
patentee claims as his own invention, then 
the patentee has failed to comply with the 
conditions and requirements of the law, 
and his Patent is bad. 

As to the claim, it is the patentee's own 
definition of his rights, by which he must 
stand or fall. The law will not give him 
more than he has chosen to claim, nor help 
him out if he has not claimed all that he 
might have done. So far as ascertaining 
and defining the extent of the patentee's 
right is concerned, it is his claim which 
constitutes the patent. 

Numerous decisions of the Courts have 
established principles and rules applicable 
to the construction of specifications and 
claims, and these must be borne in mind in 
the framing of documents of the kind. 
Consequently the inventor will generally 
find the services of a competent Solicitor 



24 United States Patents 

experienced in this class of work necessary 
or desirable. The presentation to the 
Patent Office of carelessly or unskillfully 
drawn papers is poor economy, looked at 
from any point of view. 

The Prosecution of Applications. 
— The work of examining applications for 
Patents, at the Patent Office, is at the pres- 
ent time divided among a large number 
of Principal and Assistant Examiners ac- 
cording to an elaborate system of classifi- 
cation of subjects of invention into "divi- 
sions," "classes," and "sub-classes." 

New applications are taken up for ex- 
amination in the order in which they are 
filed, and there is considerable difference 
between the different classes, and in the 
same classes at different periods, as to the 
length of time w^hich elapses before a case 
is reached for examination. 

If the Examiner, upon reaching a case, 
determines that, so far as the records of the 



Rejections 25 

Patent Office show, the matter claimed by 
appHcant appears to be new, the applicant 
or his attorney is advised that the applica- 
tion is "allov/ed," and that a Patent will 
issue to applicant upon the payment of a 
further Government fee of Twenty dol- 
lars, provided it be paid within six months. 
The "allowance'' of an application is 
not the grant of the Patent. Applicant does 
not become a patentee until he has paid the 
final Government fee, and his Patent has 
been actually granted and issued. A period 
of about three weeks elapses between the 
payment of the final Government fee and 
issue of Patent. 

Rejections. — If the Examiner finds 
that what he considers to be the same, or 
substantially the same thing, as that 
claimed by the applicant, has been patented 
before, or described in some printed pub- 
lication, he sends to applicant, or to his 
attorney, a letter of rejection, citing the 



26 United States Patents 

particular prior Patents or printed publica- 
tions which he thinks anticipate the inven- 
tion. It is then for the applicant or his 
attorney to judge whether the rejection be 
right or wrong, and whether the claim or 
claims rejected should be insisted on, as 
originally filed, or must be abandoned, or 
should be modified and limited, and to pre- 
sent any amendments and arguments that 
may seem necessary and proper. In these 
matters, the inventor will always find the 
experience and judgment of a competent 
Solicitor useful, if not absolutely neces- 
sary. The Patent Office does not under- 
take to advise the inventor as to how much 
he may claim, or whether the claim pre- 
sented is as broad as it might have been, 
or is in the best shape. For these things 
the inventor must rely on his own judg- 
ment, or that of his Solicitor. 

Amendments. — An application may 
be mnended as often as the Examiner pre- 



Appeals 27 

sents any new references or reasons for 
rejection, so that a case may be prosecuted 
before the Primary Examiner through a 
longer or shorter series of alternate ''rejec- 
tions'' and ''amendments." 

Appeals. — When a claim has been 
Hvice rejected by the Examiner upon the 
same references, it must, if it is to be 
further urged, be appealed to the Board of 
Examiners-in-Chief. For this appeal the 
Government fee is Ten dollars. This fee, 
once paid, allows as many appeals from the 
Examiner to the Examiners-in-Chief as 
may be found necessary in the same case. 

From an adverse decision of the Board 
of Examiners-in-Chief, appeal may be 
taken to the Commissioner of Patents in 
person, upon payment of a Government fee 
of Twenty dollars, and from an adverse 
decision of the Commissioner of Patents, 
appeal may be then taken to the Court of 
Appeals of the District of Columbia, upon 



28 United States Patents 

payment of a Government fee of Ten 
dollars. 

If an applicant who has resorted to all 
these appeals without success is still dis- 
satisfied, he may file a Bill in Equity in one 
of the Circuit Courts of the United States. 

Of course, where a series of appeals 
become necessary to secure a claim or 
claims, to which applicant considers him- 
self entitled, the time required for the 
prosecution of the case to a final result is 
greatly prolonged, and for this reason, and 
to save his client pecuniary expense, the 
careful and responsible Solicitor will do all 
that he properly can to reach a satisfactory 
result without appeal. 

At the same time no discreet inventor 
and no Solicitor who has proper regard for 
his client's interests will consent (merely 
to save a little time) to forego an appeal 
at the expense of giving up some appar- 
ently substantial right. 



Solicitor' s Fee 29 

Solicitor's Fee covers not only the 
preparing of the application but also our 
services in prosecuting the case to a reason- 
able extent before the Primary Examiner. 
As the proper and careful preparation of 
the specification and the prosecution of the 
application before the Patent Office in dif- 
ferent cases will require varying amounts 
of time and labor, it will be impossible to 
name the exact amount of the solicitor's 
fee for all cases, or even for a majority of 
the cases, but inventors may rest assured 
that our charges will be reasonable and we 
will always be ready to give an approxi- 
mate estimate of the cost of an application 
for Patent when the invention is sub- 
mitted to us. Of this fee, a part is payable 
on account when the order is given us to 
proceed with the preparation of the draw- 
ings and specification, and the balance of 
the fee when the case is ready for filing. 

When appeals to the Board of Exam- 
iners-in-Chief or to the Commissioner of 



30 United States Patents 

Patents or the Court of Appeals of the 
District of Columbia become necessary, 
we ask reasonable fees for attending at the 
Patent Office to argue such appeals orally, 
and for preparing written or printed briefs 
of arguments, when deemed necessary or 
advisable. 

We have found, however, in our prac- 
tice that a patient, painstaking and reason- 
able prosecution of an application before 
the Primary Examiner will, in most cases, 
secure the allowance of all the claim or 
claims to which the inventor is fairly en- 
titled, so that the instances are exceptional 
in which we find it necessary to advise 
appeals. 

Drawings . — The cost of the drawings 
to accompany an application for Patent 
will in all cases be determined by the 
draftsman's time in making them. One of 
our draftsmen will be sent to a manufac- 
turing establishment or shop to make 



Design Patents 31 

sketches of a machine when necessary, and 
an extra charge will be made when the 
invention is presented in the form of a 
crude sketch or model requiring extra time 
and care in preparing an acceptable Patent 
Office drawing. It is preferable in all cases 
to furnish us with accurate drawings or 
blue prints in order to save this expense. 

The Government Fee for a Patent 
of invention is (unless '^appeals" or an 
^'interference'' be involved) : Thirty-five 
dollars ; payable, Fifteen dollars when th^ 
application is filed, and Twenty dollars 
within six months after it is allowed. The 
Patent will not be issued by the Patent 
Office until this final fee of Twenty dol- 
lars has been paid. 

DESIGN PATENTS 

Design Patents are granted for any 
new, original, and ornamental design for 
an article of manufacture. Such Patents 



32 United States Patents 

are intended to encourage the decorative 
arts in connection with articles of manu- 
facture, and concern matter of appearance, 
and not matters of mechanical function 
or effect, and in determining whether one 
design is or is not an infringement of an- 
other, the test is "sameness of appearance." 

Duration of Design Patents. — 
Three years and a half, seven years, or 
fourteen years, as the applicant may, in 
his application, elect. A Design Patent 
granted for one of the shorter terms can- 
not be extended. 

A design to be patentable must involve 
''invention," and the requirements as to 
novelty are the same as in the case of 
"mechanical" patents. 

What has been stated as to the proper 
party to apply for Patents of invention is 
true of Design Patents. 

The Government Fees for Design 
Patents are: For three and a half years, 



Caveats 33 

Ten dollars; for seven years, Fifteen 
dollars; for fourteen years, Thirty dol- 
lars. 



CAVEATS 

Any person who, having made a new 
invention or discovery, desires further time 
to mature the same, may, upon payment of 
a Government fee of Ten dollars, file in 
the Patent Office what is known as a 
caveat. The caveat must clearly set forth 
the object of the supposed invention and its 
distinguishing characteristics. Caveat 
papers are filed in the confidential archives 
of the Patent Office. 

If within one year from the date of 
filing of the caveat, or from the date at 
which the caveat was last renewed (for it 
may be renewed from year to year by the 
payment of successive Government fees of 
Ten dollars each) application is made by 
any other person for a Patent with which 



34 United States Patents 

such caveat would in any manner inter- 
fere, it is the duty of the Commissioner to 
give notice thereof, by mail, to the person 
by whom the caveat was filed. 

If the caveator desires to avail himself 
of his caveat, he must make application for 
Patent within three months from the time 
at which notice was mailed to him (during 
which time the conflicting application is 
suspended). His application will then be 
placed in interference with the conflicting 
application, to determine the question of 
priority of invention. (See *'Interfer- 
ences.") 

The caveator's right to notice extends 
only to notice of applications filed ajter the 
filing of the caveat, and before the expira- 
tion of the year for which the caveat was 
originally filed or last renewed. 

A caveat is not a Patent for one year, 
nor in any sense the equivalent of a Patent. 
No suit for infringement can be based on a 
caveat. 



Caveats 35 

The filing of a caveat is an advisable 
precaution, where considerable practical 
experiment is necessary to determine the 
operativeness or completeness of an inven- 
tion, or to discover what is required to 
make it operative or complete, and when 
the necessary experiments involve expos- 
ure of the invention, or where, owing to 
the particular situation- of the inventor, or 
character of his invention, considerable 
time must elapse before he can be in a posi- 
tion to apply for a Patent. 

For preparing and filing caveat papers 
our fee will vary, according to the nature 
of the case, and, with the Government fee 
of Ten dollars, is payable after the papers 
have been prepared, approved and executed 
by the inventor, and before they are for- 
warded to the Patent Office. 

The fees paid for filing or renewing a 
caveat do not go towards the expense of 
subsequent application for Patent. 



36 United States Patents 

RE-ISSUES 

When a Patent is invalid because of a 
defective or insufficient specification, or 
because the patentee has claimed more than 
he had a right to claim, if the error has 
arisen by inadvertence, accident or mis- 
take, and without fraudulent or deceptive 
intention, the patentee, his executors, ad- 
ministrators or assigns, can, on surrender- 
ing the defective Patent and paying a Gov- 
ernment fee of Thirty dollars, obtain a 
new Patent for the same invention for the 
unexpired part of the term for which the 
original Patent was granted. 

The object of a re-issue is simply to 
correct mistakes in a Patent, not to add 
new matter to it. By "new matter'' is 
meant something not to be found in the 
specification, drawing or model of the 
original Patent. 

Very few re-issues can be regarded as 
valid, so far as their claims are broader 
than those of the original Patent, if there 



Disclaimer 37 

has been any considerable lapse of time 
between the grant of the original Patent 
and the application for re-issue or unless 
the delay can be satisfactorily shown to 
have been involuntary. 

Patentees will do well, therefore, to see 
to it that proper care and skill are exercised 
in preparing and prosecuting their original 
applications, and if they have any reason to 
be dissatisfied with the scope of the claim 
or claims obtained, to take advice upon the 
subjectassoon as possible after they receive 
their patents, and if a re-issue to secure an 
enlarged claim appears necessary, to apply 
for such re-issue without delay. 

Our charge for preparing and prose- 
cuting a re-issue application will vary with 
the character of the case. 

DISCLAIMER 

Where, by mistake, and without fraud 
or intent to deceive or mislead, the patentee 
has claimed in his Patent something of 



38 United States Patents 

which he was not the original and first in- 
ventor, suit may nevertheless be main- 
tained by the patentee, or those claiming 
under him, for infringement of any part of 
the Patent, which was hona iide his own, if 
it is a material and substantial part of the 
thing patented, and distinguishable from 
the part or parts claimed without right. 

But unless a proper '"disclaimer" of the 
parts claimed without right has been en- 
tered at the Patent Office before the com- 
mencement of the suit, plaintiff, if success- 
ful, can yet recover no costs, while, if it 
appears that he has unreasonably neglected 
or delayed to enter ''disclaimer," he cannot 
maintain the suit at all. 



OPINIONS ON PATENTS 

Searches and Reports. — Persons 
thinking of investing in a Patent, or in the 
manufacture or sale of a patented inven- 
tion, should exercise the same amount of 
caution that they would were a piece of 
real estate the proposed subject of invest- 
ment. They should take proper steps to 
satisfy themselves as to the title of the per- 
son from whom they propose to purchase, 
and in the case of a Patent, the search 
means not only an inquiry into what, if 
any, conveyances appear to have been pre- 
viously made of the Patent, or of interests 
or rights therein or thereunder, but also 
as to the character of the Patent itself. 
This involves a careful study of the Patent, 
to determine what we may term its "face" 

39 



40 Opinions on Patents 

value, and a careful comparison of it with 
prior patented or published inventions to 
determine, as far as possible, how far the 
real value of the Patent and its face value 
correspond; whether or not the claims 
suffice to fairly cover and protect the in- 
vention, and whether or not the manufac- 
ture of the invention will involve infringe- 
ment of any prior valid Patent. 

Similar searches frequently become 
necessary to determine whether suit for 
infringement can probably be maintained 
or successfully resisted. 

Patent litigation is apt to be sufficiently 
expensive to warrant the exercise of all 
possible care and caution before entering 
upon it. 

The making of searches and reports as 
to the validity and scope of Patents is a 
very considerable part of our business, and 
one for which both our office in Washing- 
ton and our large Patent and technical 
library give us great advantages. 



Searches and Reports 41 

The cost of searches and reports of this 
kind varies greatly, according to the char- 
acter of the inventions involved, and the 
extent, therefore, of the search which may 
be necessary. 



LAW SUITS 

INFRINGEMENT AND INFRINGEMENT 
SUITS 

A Patent is infringed when what is 
lawfully claimed in it is either made, sold 
or used without the consent of the owner 
of the patent. If the Patent contains sev- 
eral valid claims, infringement of any one 
of those claims is infringement of the 
Patent. Persons jointly infringing are 
both jointly and severally liable to the 
party injured for the damages resulting 
from the infringement. 

Suit for infringement must be brought 
in the Circuit Court of the United States, 
in the judicial district in which the in- 
fringer resides, or in which he shall have 

42 



Infringement and Infringement Suits 43 

committed acts of infringement and have 
a regular and established place of business, 
and must be brought in the name of the 
owner or owners of the whole interest in 
the Patent, for the territory within which 
the suit is brought. A mere licensee can- 
not bring suit in his own name; although 
in equity, he may and should be made a 
co-complainant in any suit brought for the 
protection of his rights. 

Suit for infringement may be at law to 
recover damages, or (in a proper case) in 
equity, to obtain an injunction to prevent 
continuance of the infringement, and also 
to recover the profits which the infringer 
has derived, and the damages, if any, in 
excess of the amount of those profits, 
which plaintiff may have suffered from the 
infringement. 

Injunctions are either final or prelimi- 
nary. A final injunction is one granted 
upon a decree in favor of the plaintiff, 



44 Patent Law 

after final hearing of the cause. A pre- 
Hminary injunction is one granted in ad- 
vance of final hearing, upon motion based 
upon affidavits. As a rule, this latter class 
of injunctions is granted only where the 
Patent has already been litigated and judi- 
cially sustained, or where the Patent has 
been in existence for a number of years, 
and there has been long-continued public 
acquiescence in the patentee's alleged 
rights, and where the infringement com- 
plained of is admitted or entirely clear. 
The Courts, as well in equity as at law, 
are empowered by the Statutes to enter 
judgment for any sum above the amount 
found for actual damages sustained, not 
exceeding three times the amount. 

In a suit for infringement the Patent 
is evidence for the patentee to the extent of 
raising a prima facie presumption of its 
own validity and throwing upon the de- 
fendant the burthen of proof to show its 
invalidity if he can. On the other hand, 



Infringement and Infringement Suits 45 

the burthen is upon the patentee to prove 
the infringement which he charges. 

We have had an experience of many 
years in the prosecution and defence of 
infringement suits, and the management 
of such suits forms a large and important 
branch of our business. 

Litigation sometimes arises between 
parties to agreements relating to patent 
rights. Such, for example, are suits 
brought by a patentee to recover royalties 
from a licensee, suits to enforce agree- 
ments to sell patents, etc., etc. Suits of 
this character, while they frequently in- 
volve the interpretation of the patents con- 
cerned and also indirectly questions of 
infringement, are not within the jurisdic- 
tion of the Federal Courts except in cases 
of diverse citizenship (that is, where 
plaintiff and defendant reside in different 
States) and so between citizens of the 
same State must be brought in the local 
Courts. It is apparent, however, that 



46 Patent Law 

knowledge of, and experience in, the 
Patent Law are often quite as essential, 
on the part of the attorney conducting such 
litigation, as in ordinary infringement 
suits. 

The prosecution and defense of suits 
relating to patent contracts is a branch of 
our business. 

INTERFERENCES 

An interference is a proceeding in the 
nature of a Law Suit instituted in the 
Patent Office to try the question of priority 
of invention between two or more appli- 
cants, or between an applicant and a 
patentee, claiming the same patentable 
invention. 

If two or more applications, containing 
conflicting claims, are pending in the Pat- 
ent Office at the same time, the Commis- 
sioner must declare an interference, and 
determine the question of priority of in- 
vention before granting a Patent to either 



Interferences 47 

applicant for what is thus claimed by both, 
and must award the Patent to that contest- 
ant whose proof shows him to be the first 
and true inventor, within the meaning of 
the law. 

Again, if an applicant for a Patent, 
having been rejected upon an unexpired 
Patent claiming the same invention, be- 
lieves that he made the invention before 
the patentee, he is entitled to an interfer- 
ence to try the question of priority of in- 
vention, and, if the interference be decided 
in his favor, to have a Patent granted to 
him, notwithstanding the existence of the 
prior Patent. The Commissioner cannot 
revoke a Patent once granted, but can 
grant a Patent to a second party proving 
himself to have been the prior inventor, 
and the United States Courts have power 
to vacate or declare void either of two or 
more interfering Patents in a suit insti- 
tuted by the owners of either of the Pat- 
ents. 



48 Patent Law 

An interference is instituted by notice 
from the Patent Office to each of the con- 
flicting claimants, stating the particulars in 
which their cases are considered to conflict, 
and requiring each of them, if he desires to 
contest the matter, to file in the Patent 
Office, on or before a specified date, what is 
technically termed a ''preliminary state- 
ment," under oath, giving the date of his 
original conception of the invention, etc. 
If, upon opening and examining these 
statements the Examiner concludes that 
the case is one which must be decided upon 
proofs to be presented by the respective 
parties, he notifies them to that effect, and 
assigns times within which each party 
must take testimony in support of his 
case, and a time, after the closing of the 
testimony, at which he will give the parties 
a hearing. 

Each party must give notice to his 
opponent of the time and place at which he 
will take testimony, and opportunity to 



Interferences 49 

cross-examine the witnesses, if he desires 
to do so. 

The testimony thus taken before a 
proper officer is reduced to writing and 
filed in the Patent Office; besides which, 
each party must furnish printed copies to 
the Office and to the opposing party or par- 
ties, unless such copies are dispensed with 
on special application based upon reasons 
satisfactory to the Office. 

The Interference Examiner hears the 
arguments of the respective parties, or 
their counsel, at the time appointed, and 
proceeds to determine the question of pri- 
ority of invention upon the evidence and 
arguments before him, and files a written 
decision. 

From his decision an appeal lies to the 
Board of Examiners-in-Chief upon pay- 
ment of a Government fee of Ten dollars, 
and from the Board, appeal may be taken 
to the Commissioner of Patents in person 
upon payment of a fee of Twenty dollars. 



50 Patent Law 

From the decision of the Commissioner an 
appeal may be taken to the Court of x\p- 
peals in the District of Columbia. 

This brief and very general explana- 
tion of the nature of an interference, and 
the proceedings therein, will suffice to 
show that it is simply a species of litiga- 
tion. 

We are fully prepared to give prompt 
and careful attention to the prosecution 
of cases of interference. 

It is simply impossible to give any gen- 
eral estimate of the cost of such proceed- 
ings, as that cost must vary greatly, ac- 
cording to the circumstances and char- 
acter of each particular case. 

ASSIGNMENTS AND AGREEMENTS 

A Patent or interest therein may be 
assigned either before or after the grant of 
the Patent. The assignment must be in 
writing, signed by the party making it, but 
no particular form of instrument and no 



Assignments and Agreements 51 

particular method of execution are pre- 
scribed by the Statute. Acknowledgment 
is, however, desirable. 

Strictly speaking, an assignment is a 
transfer either of the whole interest or of 
an undivided part (as a half or a fourth) of 
such whole interest in the Patent, through- 
out every part of the United States. By 
"undivided interest" is meant simply that 
there is no territorial division of interest; 
that the interest conveyed is some frac- 
tional part of the entire interest through- 
out the whole country. 

The patentee may also assign the ex- 
clusive right under his Patent to make, use 
and sell, or to grant to others the right to 
make, use and sell, the thing patented, 
within and throughout some specified part 
of the United States, and this kind of as- 
signment is technically termed a grant. 

An assignment or grant which is not 
recorded in the Patent Office within three 
months from its date is void as against any 



52 Patent Law 

subsequent purchaser or mortgagee of 
the same interest or right for a valu- 
able consideration without notice. As 
between the parties themselves, or as 
against a subsequent purchaser, without 
consideration, or with notice, actual or 
constructive, an unrecorded assignment or 
grant is valid. The recording of an as- 
signment or grant at any time after its date 
is notice to the world from and after such 
record. 

Joint ownership of a Patent, or interest 
therein, does not of itself make the parties 
partners. They are merely tenants in com- 
mon, each having the right to separately 
make, use or sell the invention without lia- 
bility to account to his co-owner or owners 
for any part of the profits derived from 
such exercise of the patent privilege, and 
each of said joint owners may separately 
sell and convey his part of the interest, or 
may license other persons to make, use or 
sell the invention. 



License 53 

Whenever, therefore, it is intended that 
the relation of copartnership shall exist 
between joint owners of a Patent, or inter- 
est therein, or that such interest shall be 
enjoyed only by the parties jointly, for 
their joint benefit, there must be an ex- 
press agreement between them to that 
effect. 

An assignment purporting to convey 
an invention or inventions not yet made* 
may operate as an agreement to assign, and 
give an equitable, but not the legal, title to 
such invention or inventions if subse- 
quently made. 

An assignment of the interest or part 
of the interest in a Patent does not carry 
with it the right to, or any interest in, 
damages for infringements of the Patent 
which may have occurred prior to the 
assignment. 

License. — An instrument which con- 
veys less than either the entire interest or 



54 Patent Law 

an undivided part of that entire interest in 
the Patent throughout the entire country, 
or some specified part of it, is a license. 
Licenses are not required to be recorded. 

An assignment or grant must be in 
writing, but a license can be merely oral, 
and what is known in law as a constructive 
license may arise out of acts done or per- 
mitted by the inventor. For example, a 
person who buys from the inventor, or, 
with his knowledge and consent, con- 
structs a newly invented or discovered ma- 
chine or other patentable article, before the 
inventor has applied for a Patent, or who 
sells or uses one so constructed, has the 
right to continue to use, or to sell to others 
to be used, the specific machine or article 
so made or purchased after the inventor 
has obtained his patent. 

Again, where an invention is made and 
put into practice by an employee in the 
time and at the expense of the employer, 
or by one member of a partnership at co- 



License 55 

partnership expense, such circumstances 
will, as a rule, amount to constructive li- 
cense to use the invention, to the employer 
in the one case, or the partnership in the 
other; a license purely personal and not 
transferable. 

A mere license is never transferable 
from the original licensee to another party, 
unless the terms of the written instrument, 
where there is one, expressly provides that 
it shall be transferable, and a transferable 
license is not, unless expressly made so, 
"apportionable,'' but can be transferred 
only as an entirety. 

For preparing assignments, licenses, 
agreements, powers of attorney, etc., relat- 
ing to Patents, we charge reasonable fees, 
according to the character and complexity 
of the documents. 



56 Patent Law 

MARKING PATENTED ARTICLES 
It is made the duty of all ^'patentees, 
their assigns and legal representatives, and 
all persons making or selling any patented 
article for or under them/' to give suffi- 
cient notice to the public that the same is 
patented. This is to be done, either 

1. By fixing on the article itself the 
word ''patented'' together with the day 
and year the Patent was granted; or 

2. Where, from the character of the 
articles, this cannot be done, by fixing to 
the article itself or to the package wherein 
one or more of the articles is contained a 
label containing the like notice. 

The penalty for failure to comply with 
this requirement of the law is ''that in any 
suit for infringement by the party failing 
so to mark, no damages shall be recovered 
by him, except on proof that the defend- 
ant was duly notified of the infringement, 
and continued, after such notice, to make, 
use or vend the article so patented. 



False Marking 57 

Failure to mark does not deprive the 
plaintiff of the right to an injunction to 
prevent continuance of infringement; it 
affects only his right to recover damages 
for past infringement. 

False Marking. — The law further 
provides that every person shall be liable 
to a pecuniary penalty ($ioo for each 
offence), who, in any manner, 

1. Marks upon anything made, sold or 
used by him, for which he has not obtained 
a Patent, the name or any imitation of the 
name of any person who has obtained a 
Patent therefor, without the consent of 
that person, or his assigns or legal repre- 
sentatives; or 

2. Marks upon or afifixes to any such 
patented article, the word "patent," "pat- 
entee," or "letters patent," or any word of 
like import, with intent to imitate or coun- 
terfeit the mark or device of the patentee, 
without having the license or consent of 



y 



58 Patent Law 

such patentee, his assigns or legal repre- 
sentatives; or, 

3. Marks upon or affixes to any un- 
patented article, the word 'Tatent," or any 
word importing that the same is patented, 
for the purpose of deceiving the public. 



TRADE-MARKS 

A Trade-mark is a name, symbol, fig- 
ure, letter, form or device affixed by a 
manufacturer or merchant to goods which 
he makes or sells, in order to designate 
them, and distinguish them on the market 
from goods of the same kind made or 
sold by others; to the end that they may 
be known in the market as his, and that he 
may thus be able to secure to himself the 
profits resulting from a reputation for su- 
perior skill, industry or enterprise. 

Trade-mark property has little, if any- 
thing, in common with that which exists 
in Patents or Copyrights. '^Invention'' 
does not enter into the matter. Words, 
marks or devices well known and in com- 

69 



60 Trade-Marks 

mon use may be adopted as trade-marks, 
provided they have not been previously 
used for the purpose of designating the 
same or similar kinds of goods. The 
property in a trade-mark is not a property 
in the mark abstractly considered, but is 
simply an exclusive right to use the mark 
upon some particular class or kind of 
goods for the purpose of pointing out 
origin or ownership. Thus, different 
parties may lawfully appropriate the same 
mark, provided each uses it for an entirely 
different kind of goods, and each one of 
them will in that case have the exclusive 
right to the use of that mark in connec- 
tion with the particular class of goods for 
which he has appropriated it. 

As the office of a trade-mark is to 
point out the origin or ownership of the 
article to which it is affixed, i, e,, to give 
notice who is the maker or seller of that 
particular article, only such words, marks, 
etc., as, either in themselves or by associa- 



Trade- Marks 6 1 

tion, point distinctively to the origin or 
ownership of the article, can form valid 
trade-marks. 

Generic names, or names merely de- 
scriptive of an article of trade, of its quali- 
ties, ingredients, or characteristics, or 
which, from the nature of the facts they 
are used to signify, other persons may 
employ with equal truth, and therefore 
have an equal right to employ for the same 
purpose, cannot be claimed as trade-marks. 

Congress, by Act of March 3, 1881, 
provided for the registration at the Patent 
Office of certain trade-marks, i, e., such 
as are used in commerce with foreign na^ 
tions or with the Indian tribes^ and the 
owners of which are either domiciled in 
the United States, or located in some for- 
eign country or tribe, which, by treaty, 
convention or law, affords similar privi- 
leges to citizens of the United States. 

At the present time, Austria, Belgium, 
Brazil, Denmark, France, Germany, Great 



62 Trade Marks 

Britain, Hungary, Italy, Japan, Nether- 
lands, Russia, Servia, Spain and Switzer- 
land have trade-mark treaties or conven- 
tions with the United States. 

To be registrable under the Act, a 
trade-mark must appear to be lawfully 
used as such by the applicant in foreign 
commerce or commerce with Indian tribes, 
or to be within the provision of a treaty, 
convention, or declaration with a foreign 
power. The mark must not be merely the 
name of the applicant, nor be identical 
with a registered or known trade-mark 
owned by another and appropriated to the 
same class of merchandise, nor so nearly 
resemble some other person's lawful trade- 
mark as to be likely to cause confusion or 
mistake, or to deceive purchasers. 

Application for registry of a trade- 
mark must be made by the person, firm or 
corporation owning the mark, must state 
the name, domicile, location and citizen- 
ship of the party applying, and the class 



Trade-Marks 63 

of merchandise, and the particular de- 
scription of goods within that class to 
which the trade-mark has been appropri- 
ated, and must give a description of the 
mark, with jac similes thereof, and a 
statement of the mode in which the same 
is applied and affixed to goods, and the 
length of time during which the mark has 
been used. 

Furthermore, the application must be 
accompanied by a written declaration veri- 
fied by the person, or a member of the firm, 
or officer of the corporation applying, to 
the effect that applicant has at the time a 
right to the use of the mark, that no other 
person, firm or corporation has the right 
to such use, either in the identical form, or 
in any such near resemblance thereto as 
might be calculated to deceive; that the 
mark is used in commerce with foreign 
nations or Indian tribes, and that the de- 
scription and fac similes presented for 
registry truly represent the mark. 



64 Trade-Marks 

The Government fee for registering a 
Trade-mark is Twenty-five dollars, pay- 
able upon filing the application. 

Trade-mark applications are subject to 
examination, by the trade-mark Examiner 
in the first instance, and from an adverse 
action by him an appeal lies to the Com- 
missioner of Patents, no Government fee 
being required for such appeal. 

If a trade-mark is adjudged by the 
Examiner, or by the Commissioner on 
appeal, to be lawfully registrable, a Certifi- 
cate of Registry is issued by the Commis- 
sioner, to which certificate is attached a fac 
simile of the mark, and a printed copy of 
the registrant's statement and declaration. 

In cases of conflicting applications for 
registry, or conflict between an applicant 
and a prior registrant, the Patent Oflice 
declares an Interference, in order to deter- 
mine the question of priority of adoption 
or right. The proceedings in such Inter- 
ferences follow, as nearly as practicable, 



Trade-Marks 65 

the practice in Interferences upon applica- 
tions for Patents. 



A certificate of registry remains in 
force for thirty years, except where the 
mark is claimed for and applied to articles 
not made in this country, and receives pro- 
tection under the laws of some foreign 
country for a shorter period. In such 
cases the certificate of registry here will 
cease to be in force at the same time that 
the trade-mark ceases to be exclusive 
property elsewhere. 

Registration for a further period of 
thirty years may be obtained upon applica- 
tion at any time during the six months 
before the expiration of the first term, 
and payment of a further Government fee 
of Twenty-five dollars. The property 
in a lawful trade-mark does not necessar- 
ily cease with the expiration of the term of 
registry, the Act especially providing that 
nothing contained in it shall be construed 



66 Trade-Marks 

as unfavorably affecting a claim to a trade- 
mark after the term of registration has ex- 
pired. 

Congress did not, in this Registration 
Act, undertake to create any new law as 
to what is or is not a valid trade-mark ; it 
merely provided for the "registry'' of cer- 
tain classes of lawful trade-marks. 
Whether a given mark is or is not a lawful 
trade-mark must be determined by refer- 
ence to precedents established by decisions 
of the Federal and State Courts. Regis- 
tration does not create the property in a 
trade-mark. It will not legalize any mark 
not in itself a legal trade-mark, and on the 
other hand a legal and valid trade-mark is 
property, and can be protected as such, al- 
though it is not registered under the act. 

The Federal Registration Act does not 
apply at all to a very large, and probably at 
the present time much the largest class of 
trade-marks, those, to wit, which are used 
only in domestic or Inter-State commerce. 



Trade-Mark Suits 67 

Such marks may, however, be regis- 
tered under the respective State Acts in the 
various States, and under some circum- 
stances it is advisable to so register them. 
We shall be glad to give, upon application, 
full information as to the advantages, re- 
quirements and cost of registration in any 
State. 

Trade-mark Suits. — The proprietor 
of a duly registered lawful trade-mark 
may in a proper case bring suit against 
infringers in the Courts of the United 
States, either at law, to recover damages, 
or in equity to enjoin wrongful use, and to 
recover compensation therefor; the United 
States Courts having in such a case orig- 
inal and appellate jurisdiction without re- 
gard to the amount in controversy or to 
the citizenship of the parties, provided the 
registered mark is being used in commerce 
with foreign countries or the Indian tribes, 
and that use is being wrongfully interfered 
with by the defendants. In such a suit the 



68 Trade-Marks 

registration is prima facie evidence of 
ownership. 

Congress did not, however, undertake 
to take away or interfere with the jurisdic- 
tion of State Courts in trade-mark cases. 
On the contrary, the Act provides that 
nothing contained in it shall prevent, les- 
sen, impeach, or avoid any remedy at law 
or in equity, which any party aggrieved by 
any wrongful use of any trade-mark might 
have had, if the Act had not been passed ; 
so that, even as to trade-marks properly 
registrable and duly registered under the 
Act, the owners may still, if they prefer it 
for any reason, resort to the State Courts 
for a remedy against infringement, instead 
of bringing action in the Federal Courts 
under the Registration. 

Assignments. — As trade-mark prop- 
erty does not exist in the mere mark, 
abstractly considered, but only in the use 
of it with reference to some particular per- 



Trade-Marks Abroad 69 

son or property, an assignment of a trade- 
mark, to carry anything, must be in con- 
nection with the business of manufactur- 
ing or selling the particular merchandise 
to which the trade-mark has been attached. 

The Patent Office rules provide for the 
recording of assignments of registered 
trade-marks. Such assignment must be 
by an instrument in writing, no particular 
form of instrument being prescribed, save 
that the trade-mark must be identified by 
the number. The instrument must be re- 
corded in the Patent Office within sixty 
days after its execution, in default of 
which it may be void as against any sub- 
sequent purchaser or mortgagee for valu- 
able consideration without notice. 

The fees for recording such assign- 
ments are the same as those for recording 
assignments of Patents. 

Trade-marks Abroad. — American 
manufacturers exporting their goods to 



70 Trade Marks 

foreign countries, and having valuable 
trade-marks connected therewith, may ob- 
tain registration of such marks in most of 
the countries throughout the world. 

We are prepared to attend to the regis- 
tration of trade-marks in foreign coun- 
tries, as well as in the United States ; and 
information as to the cost of registry in 
different foreign countries will be given 
upon inquiry. 

In some countries the right to register 
a trade-mark is not dependent upon pri- 
ority of adoption and use but solely upon 
priority of application to register. This is 
true, for example (with certain qualifica- 
tions), in both Germany and Cuba, and in 
both of those countries manufacturers 
have been compelled to abandon the use 
of marks rightfully theirs merely because 
they have failed to register in the respect- 
ive Patent Offices and some one else has 
chosen to do so in his own name. This 
5ubject of foreign registration of trade- 



Prints and Labels 71 

marks is, therefore, important, much more 
so, indeed, than many manufacturers be- 
lieve. 

Besides acting as solicitors in the mat- 
ter of applications for registry of trade- 
marks in this and foreign countries, we 
act as counsel in trade-mark suits in the 
Courts of the United States, and of the 
several States. 

PRINTS AND LABELS 

Congress, by Act of June, 1874, en- 
acted that the words ''engraving," "cut," 
**print," in the copyright statute, should 
thereafter be applied only to pictorial illus- 
trations or works connected with the fine 
arts, and that prints or labels designed to 
be used for any other articles of manufac- 
ture should not be entered under the copy- 
right law, but should be registered in the 
Patent Ofifice. Such registry must pre- 
cede publication. 



72 Prints and Labels 

The Commissioner of Patents has, 
since this Act, had charge of the super- 
vision and control of the entry of such 
prints or labels, in conformity with the 
regulations provided by law as to copy- 
rights and prints, except that the Govern- 
ment fee for recording the title of any 
such print or label (not being a trade- 
mark) is Six dollars, which covers the ex- 
pense of furnishing a copy of the record 
under the seal of the Commissioner of 
Patents, to the party entering such print 
or label. 

The prints and labels registrable in the 
Patent Office under this Act have been 
defined as any device, picture, word or 
words; figure or figures {not a trade- 
mark) impressed upon an article of manu- 
facture or upon paper or other material 
to be attached to such an article, or to 
bales, boxes and packages containing the 
same, to indicate the contents of the pack- 
age, the name of the manufacturer, or the 



Prints and Labels 73 

place of manufacture, the quality of 
goods, directions for use, etc. 

In applying for the registry of a print 
or label, five copies of the same must be 
filed in the Patent Office, and one of these 
copies is certified under the seal of the 
Commissioner of Patents and returned to 
the registrant. The certificate of registra- 
tion continues in force for twenty-eight 
years. 

Under the law as established by recent 
decisions, a print or label to be registrable 
under the Act must be more than a mere 
statement of the character, etc., of the 
goods; it must be or contain something 
"original" and having by itself some value 
as a composition, at least to the extent of 
serving some purpose other than a mere 
advertisement or designation. 

Manufacturers desiring to protect their 
trade circulars, catalogs, etc., and the pic- 
torial matter contained therein, from un- 
authorized use by competitors, to that end 



74 Copyright 

frequently make use of this law providing 
for the registration of prints and labels. 



COPYRIGHT 

The Revised Statutes provide that the 
author, inventor, designer or proprietor of 
any book^ map, chart, dramatic or 

MUSICAL COMPOSITION, ENGRAVING, CUT, 

PRINT (connected with the fine arts) or 
photograph or negative thereof, or a 

PRINT, DRAWING, CHROMO, STATUE, STAT- 
UARY, and of MODELS or designs intended 
to be perfected as works of the fine arts, 
and the executors, administrators or as- 
signs of any such person shall, upon com- 
plying with certain provisions of the 
statute, have the sole right of printing, re- 
printing, publishing, applying, executing, 
finishing and vending the same, and in the 
case of a dramatic composition, of pub- 
licly performing or representing it, or 



Copyright 75 

causing it to be performed or represented 
by others. 

The person wishing to copyright must, 
on or before the day of pubHcation, deliver 
at the office of the Librarian of Congress 
in Washington, or deposit in the mail to 
his address, a printed copy of the title of 
the book or other article, or a description 
of the drawing, painting, chromo, statute, 
statuary, or model or design for a work of 
the fine arts, for which he desires a copy- 
right. He must, not later than the day 
of publication thereof, deliver at the office 
of the Librarian of Congress, or deposit 
in the mail addressed to him, two copies of 
such copyright book or other article, or, 
in the case of a painting, drawing, statue, 
statuary, model or design for a work of 
the fine arts, a photograph of the same. 

Copyrights are granted for the term of 
twenty-eight years from the time of re- 
cording the title thereof, and the author, 
inventor, or designer of the copyright 



76 Copyright 

article, if still living, and a citizen of the 
United States, or resident therein, or his 
widow or children, if he be dead, may have 
the same exclusive right continued for the 
further term of fourteen years. 

A Copyright is assignable by an 
instrument of writing, the assignment to 
be recorded in the office of the Librarian of 
Congress within sixty days after its exe- 
cution, in default of which it is void as 
against any subsequent purchaser, or mort- 
gagee, for valuable consideration, without 
notice. 

The owner of a copyright is required 
by the statute to give notice thereof by 
inserting in each copy, on the title-page, or 
the page immediately following (if it be 
a book), or if a map, chart, musical com- 
position, print, cut, engraving, photo- 
graph, painting, drawing, chromo, statue, 
statuary, or model or design, by inscribing 
upon some visible portion thereof, or of 



A Copyright is Assignable 11 

the substance on which it is mounted, 
either the words "Entered according to 

Act of Congress in the year , by 

, in the Office of the Librarian of 

Congress at Washington," or at his option, 
the word "Copyright," together with the 
year the copyright was entered, and the 
name of the party by whom it was taken 
out. No party failing to comply with this 
requirement of the statute can maintain an 
action for the infringement of his copy- 
right. 

The Circuit Courts of the United 
States have sole original jurisdiction of 
actions under the copyright statute, and 
have power, upon bill in equity, filed by 
any party aggrieved, to grant injunctions 
to prevent violation of copyright, on such 
terms as the Court may deem reasonable. 

The statute likewise provides for the 
recovery of damages for infringement of 
copyright, and for the forfeiture by the 
offending party, to the proprietor, of every 



78 Copyright 

copy of the infringing book (if the case be 
that of a book), and for sundry other 
forfeitures in the case of an infringing 
map, chart, print, cut, etc. Forfeitures 
under the copyright statute must be en- 
forced by action at law. 

We undertake not only the obtaining 
of copyrights but also the prosecution or 
defense of suits for infringement of copy- 
right. 

Copyright Abroad. — Citizens of the 
United States may obtain copyright in 
Great Britain, France, Germany, Belgium, 
Italy and Switzerland, under certain inter- 
national copyright arrangements with 
those countries. 

Through our correspondents abroad 
we attend to the securing of copyrights in 
the countries named. 



FOREIGN PATENTS 

It sometimes becomes important to 
inventors to patent their inventions 
abroad, as when such inventions are of 
unusual general value or of especial value 
in particular countries, or when there are 
exceptional opportunities of disposing of 
the Patent rights which may be acquired 
in foreign countries. 

Should an inventor desire to protect 
his invention abroad, we advise that in all 
cases he delay making application in for- 
eign countries until the application for the 
United States Patent has been allowed, 
for the reason that the prosecution of the 
case in the United States Patent Office is 
calculated to inform the inventor as to the 

79 



80 Foreign Patents 

real scope of his invention and he may thus 
determine the breadth to be given to his 
claims abroad. On the other hand, in pro- 
curing foreign Patents, steps should be 
taken to have the papers prepared and 
sent abroad during the time allowed for 
the payment of the final Government fee, 
and before the issue of the United States 
Patent, because in some of the most im- 
portant foreign countries, valid Patents 
cannot be obtained for inventions which 
have been published prior to application 
there. 

It is not advisable, however, to delay 
the payment of the final Government fee 
for the United States Patent longer than 
necessary, since there is a possibility of the 
issue of the Patent here being stopped for 
an interference with some later applica- 
tion. 

On receiving notice, therefore, from 
a client, whose case has been allowed, 
that he intends to procure foreign Patents, 



Foreign Patents 



81 



immediate attention will be paid to the 
preparation of the papers, so that there 
may be no unnecessary delay in the issue 
of the United States Patent. 

The terms of patent protection in some 
of the principal foreign countries are as 
follows : 



England 


. .14 years 


Italy . . . 


. 15 years 


France . . 


. . 15 '' 


Norway . , 


. 15 '* 


Germany 


. . 15 " 


Sweden . . 


. 15 " 


Belgium . . 


. . 20 '' 


Japan . . . 


. 15 ** 


Austria . . 


. . 15 '' 


Canada . . 


. . 18 '' 


Hungary . 


. . 15 " 


Mexico . . 


. 20 '* 


Switzerlanc 


i . . 15 '' 


Russia . . 


. . 15 '' 


Spain . . 


. . 20 '' 


Cuba . . . 


. . 17 '' 



In most of these countries patentees 
are required to pay an annual fee or tax 
so long as they desire to keep the patent 
in force and there is in most cases a re- 
quirement that the patent be commercially 
exploited in the country where protection 
is granted. 

In the previous editions of this book 
we have set forth at some length the in- 



82 Foreign Patents 

formation usually required by our clients 
with respect to the patent laws and prac- 
tice in the various foreign countries. 
Owing to the frequent changes in such 
laws and practice, and the increasing inter- 
est taken by our clients in the subject of 
foreign patents generally, we are about 
to issue a separate pamphlet on that sub- 
ject, and have accordingly omitted detailed 
information here. Those of our clients 
who desire information as to foreign pat- 
ents are referred to said ''Foreign Patents'' 
pamphlet, which may be had upon applica- 
tion. 



CORPORATIONS 

The corporation is frequently resorted 
to by inventors and patentees as a medium 
for exploiting their inventions without un- 
necessary risk. The owner of a patent 
may desire to exploit the invention himself 
or he may desire to enlist the aid of others 
in so doing. In either case it is frequently 
desirable to incorporate the undertaking in 
order that in case of failure the amount of 
liability may be limited to the actual sum 
agreed to be devoted to the project. The 
facility with which a corporation can in- 
crease its working capital by the sale of 
stock is another feature peculiarly adapt- 
ing it for use in the development of inven- 
tions. We are prepared to take the neces- 
sary steps to secure charters under the 
laws of the various States and to attend 
to the various other details connected with 



84 Corporations 

the organization of corporations and other 
forms of stock companies or joint enter- 
prises, for our clients. The following in- 
formation is that most frequently desired : 

At the common law (that is to say, ac- 
cording to general legal principles inde- 
pendent of statutory provisions) persons 
associated together in a business enterprise 
are separately liable for all debts con- 
tracted by, or on behalf of, the firm within 
the scope of its business. Modern legisla- 
tion has, however, brought forth several 
forms of association in which the personal 
liability of the members is limited to the 
amount which they have agreed to put into 
the business. Of these forms the corpora- 
tion is one. 

To secure the benefits of incorporation 
formal application for a charter must be 
made to the proper authorities, and certain 
statutory requirements must be fulfilled. 
The mode of application and the varying 
requirements in some of the principal in- 
corporating States are as follows : 



Corporations 86 

PENNSYLVANIA 

In Pennsylvania application for a 
charter may be made by three or more per- 
sons, one of whom at least must be a citi- 
zen of the State. The capital stock may be 
any amount and duration for any term of 
years or perpetual. Any nature of busi- 
ness may be undertaken, but no corpora- 
tion can transact more than one kind of 
business, which must be set forth in the 
charter. Before commencing business ten 
per cent, of the entire authorized capital 
stock must be actually paid into the cor- 
porate treasury in cash ; the balance of the 
capital stock, or any part thereof, may be 
issued for property at a reasonable valua- 
tion. The incorporating fees are $30, plus 
a bonus of one-third of one per cent, of the 
total amount of capital stock authorized. 
The annual franchise tax is five mills on 
the dollar of actual value of the capital 
stock (excepting so much of the stock as 
is invested purely in the manufacturing 
plant within the State) . 



86 Corporations 

NEW YORK 

In New York a charter can be obtained 
by three or more persons, one of whom 
must be a resident of the State and two- 
thirds of whom must be citizens of the 
United States. Capitalization may be for 
any amount not less than $500, and the 
term any number of years. A corporation 
may be formed for the purpose of carrying 
on any lawful business. No definite 
amount of stock need be subscribed for at 
the time of incorporation, but the capital 
with which the company will begin busi- 
ness must be stated definitely and be not 
less than $500. Until this amount is paid 
in cash or property the company may not 
begin business. At least one-half of the 
total capital must be paid in within one 
year after incorporation. Stock may be 
issued for property at such reasonable 
valuation as the directors may give it. 
The filing fee is ten dollars and one-eighth 
of one per cent, of the total amount of 



Corporations 87 

authorized capital must be paid to the State 
Treasurer upon organization. The annual 
tax varies according to the amount of 
dividend declared, and is reckoned on the 
capital stock employed in the State. If 
the dividends be six per cent, or more, 
the tax is one-fourth of a mill for each 
one per cent, of dividends declared ; if the 
dividends be less than six per cent, the rate 
is one and one-half mills per one dollar 
on such part of the capital stock as would 
equal the proportion of its assets employed 
within the State. 

CONNECTICUT 

Corporations may be organized in Con- 
necticut by three or more persons for the 
transaction of any lawful business. The 
term may be limited or perpetual, and 
capital stock may be authorized to any 
amount not less than $2000. The par 
value of each share of stock must be not 
less than $25. Not less than $1000 must 



88 Corporations 

be actually paid in before the commence- 
ment of business. The cost of incorporat- 
ing is a fee of about $5, payable to the 
Secretary of State, and a franchise tax 
payable upon incorporation, at the fol- 
lowing rate, to wit: 50 cents per $1000 
of authorized capital stock up to $5,000,- 
000, and 10 cents per $1000 of stock in 
excess of $5,000,000. Stock may be paid 
for in property at actual value and the 
bona ade judgment of a majority of the 
directors as to value is conclusive. There 
is no annual franchise tax. 

NEW JERSEY 

Three or more persons may incorporate 
in New Jersey and none need be residents 
of the State. The capital stock may be 
as large as desired and duration may be 
for a term or perpetual. Any lawful busi- 
ness may be carried on. The entire capital 
stock may be issued for property and the 
bona ade judgment of the directors as to 

LofC. 



Corporations 89 

the value of the property will not be re- 
viewed by the Courts. At least one thou- 
sand dollars of the stock must be sub- 
scribed for before the commencement of 
business. The incorporation fee is twenty 
cents for each one thousand dollars of 
capitalization, but in no case less than 
$25. The annual franchise or license tax 
is at the rate of one-tenth of one per cent, 
on capital stock actually issued up to 
$3,000,000; between $3,000,000 and 
$5,000,000, one-twentieth of one per cent. 

DELAWARE 

The requirements in Delaware are the 
same as in New Jersey, save that the au- 
thorized capital stock must not be less than 
two thousand dollars. The organization 
fee is fifteen cents for each one thousand 
dollars of capitalization, but in no case less 
than $20. The annual franchise tax is 
one-twentieth of one per cent, for all stock 



90 Corporations 

issued up to $3,000,000. Between $3,000,- 
000 and $5,000,000, the rate is one- 
fortieth of one per cent. 

MAINE 

There must not be less than three incor- 
porators, none of whom need be resident 
in the State. Authorized capital stock may 
be any amount, not less than $1,000, 
and the duration any period or perpetual. 
Subscriptions may be paid in property and 
the directors' judgment as to the value is 
conclusive in the absence of fraud. No 
part of the capital need be actually paid in 
before commencing business. The incor- 
porating fee is $10 for any amount of 
authorized capital up to $10,000; $50 up 
to $500,000; $10 for each $100,000 over 
$500,000. The annual license fee is $5 on 
authorized capital not exceeding $50,000 ; 
$10 when not over $500,000; $25 up to 
$500,000; $50 up to $1,000,000; $25 for 
each additional $1,000,000. 



Corporations 9 1 

WEST VIRGINIA 

Five or more persons may incorporate in 
West Virginia and none need reside in the 
State. Capital stock may be any amount 
and the duration fifty years with privilege 
of renewal. Subscriptions may be paid in 
cash or property and ten per cent, must be 
paid at the time of subscription. The fee 
for incorporating is from $15 tO' $20, plus 
the first annual franchise tax as follows : 
Twenty dollars for authorized capital up 
to $25,000; $50 for capital up to $100,- 
000 ; and 40 cents additional on each 
$1,000 in excess of $100,000 up to 
$1,000,000. 



Additional and more detailed informa- 
tion as to the laws relating to the organi- 
zation and management of corporations 
will be furnished upon request. 



Index 93 
INDEX 

PAGE 

Abandonment of Invention 17 

Accident (see Reissue) 36 

Actions (see Law Suits) 42 

Administrators 18 

Agreements 50 

Allowance 25 

Amendments 26 

Appeals 27 

Applications for Patents 21 

" Who May Make 18 

Art (process) 15 

Assignments of Patents 50 

" OF Trade-marks 68 

" OF Copyright "j^i 

Caveats 33 

Claims 18,21,26 

Composition of Matter 15 

Contracts (see Licenses) 53 

Copyright 74 

Corporations 83 

Courts (see Law Suits) 42 

Damages for Infringement 43 

Defective Specification (see Reissue) z^ 

Description (see Application for Patent) 21 

Design Patents 31 

Disclaimer 2>7 

Drawings 30 



94 Index 

PAGE 

Duration of Patent 19 

Equity, Suits in (see Law Suits) 42 

Examination of Applications 21 

Examination, Preliminary 19 

Executors 50 

Extensions 19 

False Marking 57 

Fees for Application (Government) 31, 22 

" " " (Solicitors) 29 

" " Designs 32 

" " Caveats ZZ 

" " Reissue Z^^2>7 

" " Preliminary Examination 19 

" " Trade-marks 64 

" " Prints and Labels 71 

** " Appeals 27 

Foreign Patents 79 

" Trade-marks 69 

" Copyright 78 

Improvements, Patents for 15 

Inadvertence (see Reissue) z^ 

Infringement 42 

" Report as to 39 

Injunction 43 

Interferences 46 

Invention, Patent for 15 

Inventor, First (see Interferences) 46 

Issue of Patent 25 

Joint Invention 19 



Index 95 

PAGE 

Labels 71 

Licenses 53 

Law Suits 42 

Machine, Patent for 15 

Manufacture, Article of 15 

Marking Patented Articles 56 

AliSTAKE (see Reissue) 36 

Mode of Application 21 

Models Not Required 22 

Novelty of Inventions 16 

Opinions on Patents 39 

Preliminary Examinations 19 

Priority (see Interferences) 46 

Prior Knowledge or Use 16 

Prior Publication 16 

Profits, Infringers 43 

Prosecution of Applications 21 

Public Use 17 

Publication, Prior 16 

References, Cited by Examiner 26 

Reissue z^ 

Rejection of Application 25 

Remedy for Infringement (see Suits at Law) 42 

Reports and Opinions 39 

Rival Inventors (see Interferences) 46 

Searches 39 

Searches, Preliminary 19 

Solicitors 9 

Solicitors' Fees 29 



96 Index 

PAGE 

Specification 21 

Specimens, Not Required 22 

Stamping Patented Articles 56 

Stamping Unpatented Articles 57 

State of the Art (see Searches) 39 

State Laws (see Corporations) 83 

State Courts, Suits in 45 

Suits in the Courts 42 

Surrender and Reissue (See Reissue) 36 

Term of Patent 19 

Trade-marks 59 

" " Foreign 69 

Suits 67 

" " Assignments 68 

Transfer of Letters Patent (see Assign- 
ments) 50 

Utility of Invention 16 

Validity — Reports 39 

Who May Obtain a Patent 18 

Wrongs and Remedies (see Law Suits) 42 



NOV 17 1904 



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